The case C‑772/18 was chosen as the Impact Case of the Year 2021 by leading intellectual property magazine, Managing IP. The case was also listed as one of the noteworthy decisions in Europe in 2020 in Journal of Intellectual Property Law & Practice, Volume 16, Issue 6, June 2021. A quote from the Article written by Carina Gommers, Willem Leppink, Marius Schneider:  

“Back in 2011, Mr B, a resident of Finland, received a consignment of 150 ball bearings having a total weight of 710 kg. Ball bearings are used as spare parts in generators and engines and in the construction of bridges and tramways. Mr B took possession of the ball bearings, stored these for a few weeks in his home and then delivered these to a third party for export to Russia. He was remunerated for his services with cigarettes and a bottle of brandy. 

Trade mark infringement proceedings were brought against Mr B since the trade mark INA was affixed to those ball bearings without consent of the trade mark proprietor. At first instance, the Finnish court held that Mr B was liable. This judgment was however not confirmed on appeal. The appellate court considered that Mr B had not used the trade mark in the course of trade and was thus not liable for trade mark infringement. The court considered that his services were equivalent to storage and onward processing, without any objective of gaining economic benefit from the activity. Moreover, the remuneration received was not based on the economic exploitation of the ball bearings, but solely a consideration for the storage of the goods. A further appeal followed to the Supreme Court, which subsequently referred the questions to the CJEU. 

These questions concern the interpretation of ‘use in the course of trade’ under Article 5(1) and 5(3) of the Trade Mark Directive 2008/95/EC. Considering the circumstances of the case at hand and, in particular, the nature and volume of the ball bearings concerned, the CJEU concluded that these were manifestly not intended for private use. A person who completes the customs clearance, releases the goods for free circulation and takes possession thereof, is acting in the course of trade. Such person can therefore be held liable for trade mark infringement. The significance of the remuneration or—in the case at hand—the lack of significance thereof, was held to be irrelevant in the assessment (at [29]). This judgment reinforced the possibilities for trade mark owners to act efficiently against infringements, even in cases where the lead traders use front men in an attempt to avoid the infringing goods being stopped from further circulation and commercialization.” 

Jani Kaulo represented the party to bring trademark infringement proceedings against the infringer while still working at Kolster Ltd.